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IP Information & News

13 July 2017

EPO announces Patent Prosecution Highway with Malaysia and the Philippines


The European Patent Office (EPO) have recently announced that as of 1 July 2017, it will be possible to accelerate prosecution of a European patent application based on claims considered to be allowable by the patent offices in Malaysia and the Philippines.

These arrangements will run for a trial period up to 30 June 2020 when the situation will be reviewed.

This is one of a number of Patent Prosecution Highway partnerships which the EPO have established which are intended to reduce the duplication of work between patent offices across the world.

In order to qualify for acceleration using this program, an applicant for a European patent must show that the patent office in either Malaysia or the Philippines have found sufficiently corresponding claims on a corresponding Malaysian or Philippine patent application to be allowable.

That is to say, an applicant who owns a family of patent application which has both a European and a Malaysian or Phillipine member can apply for accelerated prosecution of the European patent application if the Malaysian or Philippine patent office find sufficiently corresponding claims to be allowable on the respective other member of the patent family. This also applies if the European patent application claims priority from a Malaysian or Phillipine patent application.

Accelerated prosecution can also be requested in the reverse situation, i.e. where the EPO finds claims to be allowable the applicant can request accelerated prosecution of sufficiently corresponding claims before the patent offices of Malaysia or the Phillipines.
The key condition is that the claims “sufficiently” correspond and we are sure that in time the meaning of the word “sufficiently” will be tested. However, the EPO have already sought to address one potential source of ambiguity by confirming that a request to accelerated prosecution of a system claim based on an allowed method claim, i.e. introducing a different category of claim, using this arrangement, will not be accepted. 

Comment

These arrangements are one way of accelerating prosecution of a European patent application and it is a positive step as one of the reasons many applicants are dissuaded from applying for a European patent is the time it can take to proceed to grant – so any arrangement which seeks to reduce that time should be seen as a good thing.

However, it should be said that a patent application which is allowed in Malaysia or the Philippines will not necessarily be allowed by the EPO – particularly as the EPO often apply very high standards of proof to matters such as inventive step and the allowability of amendments which may not cause an issue before other patent offices.

If you would like any assistance with matters related to the prosecution of European, Malaysian or Philippine patent applications then please do not hesitate to contact us.